There have been numerous media reports of Apple, Inc (“Apple”) filing an Australian trademark application for STARTUP for various services in classes 35, 37, 41 and 42. The reports stem from Tim Lince’s Trademark Watch blog which first noticed a recent trademark filing for STARTUP by Apple.  But this is not the first time Apple have sought registration in Australia for STARTUP.

Australian Trademark Application 1436263

On 19 April 2011 Apple filed an International Trademark Registration designating Australia (IRDA) which became Australian trademark application number 1436263. This IRDA claims priority via the Paris Convention from a Jamaican trademark application filed on the 21st October 2010.

Why Jamaica?

At this point you may wonder why Apple, a company based in Cupertino, USA would file a trademark in Jamaica.  This is a common technique companies use to hide a trade mark application. The technique involves filing a trade mark application in a low profile country where the trade mark register is not easily accessible (and certainly not online) then filing convention trade marks in countries of interest up to 6 months later.

For example, Apple routinely files trade mark applications in low profile countries (Caribbean countries are popular).  ICLOUD was first filed in Jamaica, IBOOKS was first filed in Trinidad and Tobago and BACK TO MY MAC was first filed in the Netherlands Antilles.  Apple then files convention applications in countries of interest within 6 months, providing them with some control over the timing of the disclosure of the new trademark.

Trademark application 1436263 has been examined by the Australian Trademark Office and an examination report issued on 5 September 2011.

Without obtaining the file history of the trademark application it is not possible to determine exactly what the objections raised were but it is likely that the Australian Trade Marks Office objected to the registration of the trademark (for at least some of the services) on the basis of section 41(6) of the Australian Trademarks Act (as it stood before changes which were made by the ‘Raising the Bar’ act on 15 April 2013).

Under section 41(6) of the Trademarks Act 1995, the onus is on the applicant to provide (usually extensive) evidence of use before the priority date of the application in order to obtain acceptance of the trademark. The reason for raising the section 41(6) objection is that in the Trademark Office’s view, there is no inherent adaption to distinguish this trademark and that other traders may legitimately wish to use the trademark (in this case, STARTUP).

For the Trademark Office to grant a monopoly in a mark that is descriptive for particular goods and services (i.e. a mark that other traders might legitimately want to use) the Office must be satisfied that at the time of filing the application the trade mark did in fact distinguish the goods and services (i.e. that consumers associate the word with the trademark applicant). The evidence required to establish this typically takes the form of years of sales, significant expenditure on advertising and examples of use of the trademark in Australia.

According to the publicly available file history of trademark application 1436263, Apple filed a response on 31 May 2013 including a Declaration (which most likely set out the evidence of use of the mark STARTUP by Apple) but a further adverse report issued on 1 July 2013.

The deadline for filing responses to the examination reports is 21 months’ from the first report (including extensions of time).  Therefore, the deadline for placing the application in order for acceptance for this trademark application was 5 July 2013 which may be one of the reasons why Apple filed a further application, namely trademark application number 1576935 on 27 August 2013 thereby “resetting the clock” on examination.

Australian Trademark Application 1576935

Australian trademark application 1576935 STARTUP was filed by Apple on 27 August 2013.  It’s likely that the Australian Trademark Office will issue an examination report that mirrors that of the examination report issued on the earlier trademark (trademark application number 1436263).

Filing this trademark application has effectively “bought” Apple a further 21 months to place the application in order for acceptance (and most likely to obtain and file evidence that the trademark has acquired enough use to be distinctive as a trademark).  Apple can now put on evidence of its use of STARTUP prior to 27 August 2013 to try to obtain acceptance of its most recent application.  This is almost three more years’ evidence of use it can rely on than for its earlier application of October 2010.

One change to the Australian Trademark Act following the changes of the Raising the Bar changes of 15 April 2013 is that section 41(6) no longer exists and a new provision is actually section 41(3) (trademarks that are to not to any extent inherently adapted to distinguish the designated goods or services). Another change to the Act is that the trademark Examiner must be satisfied under balance of probabilities that the ground for rejection exists.   In this case, the changes to the Trademarks Act are unlike to make any difference to Apple’s chances of registration.

Without extensive evidence of use, it may be difficult for Apple to obtain registration for this trademark in all of the services it has applied for. Generally trademarks will be rejected if they are too descriptive. Trademarks must be capable of distinguishing the applicant’s goods or services from those of other traders. Invented words with no meaning are generally good trademarks. The problem Apple may run into with this trademark application (for at least some of the services on which they seek registration) is that the term STARTUP is generally used to refer to companies which are in the ICT space who are developing companies.

Opposition

Even if Apple manage to persuade the Australian Trademark Office to accept the case, the trademark may be opposed by third parties at any time up to two months after the application is advertised as accepted.  If opposed, it may be up to 3 years before a decision is issued by the Australian Trademark Office (taking into account evidence that must be filed by the applicant and the opponent).

Even if the trademark is eventually registered, a ground of defence against infringement of a trademark is that the alleged infringer is using the mark STARTUP to describe their goods or services and that the use is not use as a trademark.

APP STORE

This is not the first tilt Apple have had at what would appear to be a slightly descriptive trademark.  Apple has recently appealed a decision of the Registrar of Trademarks to the Federal Court to register the trademark “App Store”.  In the trademark office decision, evidence of more than 850 million application downloads in Australia by the “App Store” since 2008, 10 million application downloads worldwide over a year and 5.5 billion downloads worldwide in the first year were not persuasive to the registrar to overcome a s41(6) objection.  This perhaps sheds some light on the level of evidence that may be required to get STARTUP over the line.

General Comment

An assessment of whether a trade mark has capacity to distinguish is made as at the date of filing of the application.  A trade mark attorney can advise you on your prospects of securing a trade mark registration and can assist you to overcome objections raised by the Trade Marks Office to registration of a trade mark on the basis it is descriptive or common to the trade.